EP 3 076 804 B1 relates to a heated aerosol generating article with thermal spreading wrap.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The feature at stake
Claim 1 as granted contains the feature that the material is a “gathered sheet”. All turned about the interpretation given to this feature.
The proprietor argued that if this term is assigned its usual meaning in the art, claim 1 is to be regarded as novel.
The opponent argued that if “gathered sheet” is interpreted in the light of the description, then it would have a broader, although still technically sensible meaning. This interpretation of “gathered sheet” would lead to a lack of novelty.
The need for a referral
In view of the need of interpreting the claim, in T 439/22, the board referred 3 questions to the EBA.
Question 1
Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
Question 2
May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
Question 3
May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
Diverging case law in respect of Question 1
The referring board identified diverging lines of case law.
One line of case law took Art 69 and Article 1 of the Protocol as the legal basis for interpretation of patent claims when assessing the patentability of an invention under Art 52-57.
Another line of case law took Art 84 as the basis.
A further line of case law which was not explicit as to which article of the EPC was the legal basis for interpretation of patent claims when assessing the patentability of an invention under Art 52 to 57.
Diverging case law in respect of Question 2
One line of case law was that a board only consulted the description and drawings when interpreting the claims to assess patentability if the person skilled in the art found a claim to be unclear or ambiguous when read in isolation.
A further line of case law was that a board always consulted the description and drawings when interpreting the claims to assess patentability.
The EBA’s decision
Admissibility
The EBA considered questions 1 and 2 as being admissible.
For the EBA, question 3 was not admissible. Question 3 is considered by the EBA to be encompassed within Question 2, hence an answer to Question 3 is not necessary for the Referring Board to reach a decision in the case before it.
The reasons for the decision
For the EBA, Question 1 concerns the legal basis in the EPC for carrying out this interpretation. As explained above, either Art 69 and Article 1 of the Protocol or Art 84 have been used as basis.
The EBA reminded that G 2/88, G 6/88 relied on Art 69 and the Protocol, and G 2/12, relied on Art 84 as the respective legal basis.
The EBA considered that neither Art 69 and Article 1 of the Protocol, nor Art 84 are entirely satisfactory as a basis for claim interpretation when assessing patentability.
Art 69 and the Protocol are arguably only concerned with infringement actions before national courts and the UPC. Such a conclusion can be drawn from the wording of Art 69 and the Protocol, the drafting history of these provisions, and from their position in the EPC.
Using Art 84 as an alternative basis for interpretation of the claims can also be criticised. Art 84 addresses the content of the patent application and is formal in nature, does not mention the invention and provides no guidance on how to interpret claims. It only sets out an instruction to the drafter of what needs to be in the claims, and an instruction to the EPO to determine whether the claims meet that purpose, cf. see T 1473/19 Reasons 3.8.
The EBA thus considered that there is no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability. Given the above, the strictly formal answer to Question 1 would be “No”.
However, in order to give some guidance, the EBA added that whether Art 69 or Art 84 is taken as the basis for claim interpretation does not appear to affect the principles that are applied.
In general terms, what the boards have done is apply the wording of these articles in an analogous way to the examination of patentability under Art 52 to 57. There is thus an existing body of case law from which the applicable principles of claim interpretation can be extracted. The EBA referred to the extensive discussion of how the boards have interpreted patent claims when assessing patentability in the referring decision and quoted T 2684/17 Reasons 2.1.4 and T 1871/09 Reason 3.1), Reason 3.3.3, and in particular T 1473/19 Reasons 3.1 to 3.15 and 3.16 to 3.16.2), and Reason 3.3.4.
From this case law the following principles of claim interpretation can be extracted:
1) The claims are the starting point and the basis for assessing the patentability of an invention under Art 52 to 57.
2) The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA, in adopting the above position, is thus rejecting the case law of the boards that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous. This is the issue raised in Question 2.
The diverging case law where the description is referred to only in cases of unclarity or ambiguity, is contrary to the wording, and hence the principles, of Art 69. It is also contrary to the practice of the national courts of the EPC states and to the practice of the UPC.
The BA found it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents. On this point, the EBA agreed with the harmonisation philosophy behind the EPC, cf. G 5/83, Reasons 6, and G 3/08, Reasons 7.2.2.
The EBA noted that finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act.
The EBA thus answers Question 2 as follows: the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA noted that the current case law of the UPC, as exemplified in Headnote 2 of the order of the CoA UPC UPC_CoA_335/2023-APL_576355/2023 : NanoString Technologies -v- 10x Genomics, of 26.02.2024 as rectified by the order of 11.03.2024, appears to be consistent with the above conclusions.
The above considerations highlight the importance of the ED carrying out a high quality examination of whether a claim fulfils the clarity requirements of Art 84. The correct response to any unclarity in a claim is amendment. This approach was emphasised in the Comments of the President of the EPO.
The order
In the light of the above, the EBA answered the referred Questions 1 and 2 as follows:
The claims are the starting point and the basis for assessing the patentability of an invention under Art 52 to 57.
The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Art 52 to 57, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
Comments
G 1/24 is one of the shortest decisions, if not the shortest, of the EBA.
It is a very summary decision that does nothing to solve the problems. It says nothing much concrete and has not decided wheter Art 69 and Art 1 of the Proptocol have to be taken into account. On the face of it, the EBA considers that Art 69 should in principle apply.
Art 84 is by no means purely formal, as it appears to be difficult to assess N and IS of an unclear claim. It can be agreed with the EBA, that if a claim is unclear, it ought to be amended.
When we see the divergence in interpretation by the boards of G 2/21, we can expect some difficulties in the future.
It will certainly not prevent divergent decisions between the BAs and the UPC.
As far as I’m concerned, it’s a political decision and the EBA is bowing down to the UPC.
The wording used by the EBA corresponds to that of the CoA UPC.
One day we will have to decide whether the patent is its own dictionary. Angora cats might soon be marching in.
It will also force EDs and ODs to look at the description, even if no relevant prior art will have be found. I pity examiners having to exercise this task. The president might claim that this is the case, but I know for a fact that this is not absolutely correct. The best example is the Agfa/Gucci case before the LD Hamburg, commented on this blog. We can certainly expect more Art 84 objections from first instance divisions, especially from EDs as G 3/14 has put a limit of the application of Art 84 in opposition.
In this respect, it is interesting to remember that in its submission for G 3/14, the president advocated looking at Art 84 in opposition. One could think that this was to overcome what had been missed during examination.
What about added matter
The referral was limited to the application of Art 52 to 57. As however, the test to determine whether there is added matter, is the N test, G 1/24, might thus also have an influence on the assessment of added-matter.
T 1473/19 has been commented in the present blog. The reference of the EBA to T 1473/19 leads to the conclusion that, although not part of the referral, the claims will have to be interpreted in the light of the description when dealing with Art 123(2) and not only Art 123(3).
As soon as we end up with interpretation, it is clear that the notion of “directly and unambiguously derivable” could be in danger. Let’s hope that this notion will remain.
Comments
4 replies on “G 1/24 has been issued”
Daniel, reading your comment brings to my mind the tart remark of UK politician at the time of COVID 19, that the public have heard more than enough from the experts. Here a Link:
.https://www.spectator.co.uk/article/fact-check-what-did-michael-gove-actually-say-about-experts/
We are living through a period in which a large number of influential people are contending that over the past few decades “we have heard more than enough” on patentability from the experts at the EPO and that the time has come for those higher up, with a more expansive view, to take charge.
A lot of people stand to make a lot more money, the more complicated patent disputes get, in Europe, from now on.
The Decision in G1/24 in my opinion, does little more than kick the can down the road a bit further. Can we expect more from the Referral on whether the description has to be conformed. After all, in the USA it isn’t and yet they argue over there that every claim duly issued by the USPTO has definitely been examined rigorously for its clarity and whether it is “supported” by the decription.
“As soon as we end up with interpretation, it is clear that the notion of “directly and unambiguously derivable” could be in danger. Let’s hope that this notion will remain.”
This decision does nothing to put “directly and unambiguously derivable” in danger. The equivalent test in the UK is:
(1) to ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application;
(2) to do the same in respect of the patent as granted;
(3) to compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.
The EPO simply needs to do the same. It merely requires them to consider the document as a whole rather than to ignore all context. This might make it harder for the EPO to revoke patents on minor technicalities, but that can only be a good thing.
I had a sliver of hope, but of course they took the path of least resistance—careful not to “muddy the waters,” as the saying goes. Taking a firmer, more consistent position would’ve required too much effort, especially with their cherished performance KPIs at stake. Once again, the same asymmetry persists: the Opponent is left to fight against the broadest possible interpretation—including equivalents—during infringement, and the narrowest, most literal construction during nullity. If a claim reads onto prior art but the description or drawings suggest something narrower, that shouldn’t be the Opponent’s problem to fix.
Possible consequences of this decision:
1. Prior to grant, the Art 84 EPC enquiry will increase yet further in intensity, with EPO Examiners taking ever more contrived and formalistic objections and goodwill between Examiners and patent prosecutors ever more strained.
2. After grant, ie in opposition proceedings, the EPO will increasingly feel itself obliged to follow the established case law of the UPC, on how to interpret a duly issued claim.
3. Increases in harmony and legal certainty, all over Europe, with bad patents getting swiftly revoked, and good ones swiftly enforced.